Friday, June 21, 2013

Precedential No. 23: CHEMIN DES PAPES Not Confusable with CHATEAUNEUF-DU-PAPE CONTROLE for Wine, Says TTAB

Deeming the first duPont factor to be dispositive, the Board dismissed this opposition to registration of the mark CHEMIN DES PAPES for "wines, sparkling wines," finding the mark not likely to cause confusion with the registered mark CHATEAUNEUF-DU-PAPE CONTRÔLÉ & Design, shown below, for wine. Furthermore, in a significant ruling, the Board held that the opposed application was not void in its entirety due to Applicant's (admitted) lack of bona fide intent to use the mark on "distilled spirits and liquors." Instead the Board ordered that those goods be stricken from the application. Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930 (TTAB 2013) [precedential].

Likelihood of confusion: As explained more fully in the opinion, Opposer is an association, or syndicate, of winegrowners, and is a member of the Chateauneuf-du-Pape AOC ("appellation d'origine controlee). These wine producers make wine from grapes grown only in the Chateauneuf-du-Pape territory of France. The designation "Chateauneuf-du-Pape" may be used by any producer whose wine has been fermented from grapes of permitted varieties grown in the defined Chateauneuf-du-Pape AOC territory.

Applicant is an independent negociant that sells wine, including wine lawfully labeled "Appellation Cotes du Rhone Controlee." It sells that wine under the opposed mark. Cotes du Rhone is an AOC within the Rhone valley.

Opposer claimed rights in the word mark or designation CHATEAUNEUF-DU-PAPE but the Board concluded that the evidence failed to establish that this term is a common law regional certification mark for wine, or that Opposer is the rightful owner of that mark. The record showed that other organizations act to prevent unauthorized use of the Chateauneuf-du-Pape AOC, and further that the INAO (Institut National Des Appellations D'Origine) controls the use of the AOC "Chateauneuf-du-Pape" designation as a certification of geographic origin and quality and type of grapes grown, cultivated, fermented, and bottled in the territory.

Turning to the registered word-and-design mark shown above, Opposer claimed that the mark is famous. The Board found, however, that although "Chateauneuf-du-Pape" is well-known in this country as a type of wine that comes from a specific territory in France, the evidence of sales and media attention submitted by Opposer did not focus on the registered mark and failed to establish its fame.

As to the marks themselves, the Board concluded that Opposer's registered mark is dominated by its design elements, since "Chateauneuf-du-Pape" is a weak source indicator - at least vis-a-vis Opposer - because it does not identify Opposer or its members as the single source of that wine. The registered mark "is just as likely to be remembered by the design of the papal insignia, which is unique to opposer."

Applicant's mark CHEMIN DES PAPES means, in French, "the way (or road) of the popes." The words in Opposer's mark mean "new castle of the pope." These terms are visually and orally different and evoke very different commercial impressions. "[T]o those familiar with the history of Rhone Valley wine and the road built by or to commemorate the pope, there is an even further attenuation as applicant's mark suggests this historical road, while opposer's does not." And to purchasers who do not know French, there is even less chance of confusion.

Third-party registration and website evidence, along with testimony from Applicant's wine expert, showed that there are other wines sold under marks that include the word "pape" or pope," leading the Board to conclude that "pape" is a weak element, present in many third-party marks.

The Board recognized that the identified goods are identical and the presumed channels of trade and classes of consumers are the same. However, it deemed the dissimilarity between the marks to be dispositive:

When viewed in their entireties, giving due weight to the components of each mark, and taking into account the weakness of the term "Chateauneuf-du-Pape Contrôlé," and the weakness of “pape” due to other uses, the presence of the term “pape” as the only common element in both parties’ marks is an insufficient basis for finding applicant's mark to create a likelihood of confusion. We find instead that confusion is not likely. Indeed, the first du Pont factor outweighs all of the other factors.

Lack of bona fide intent: The Board granted the opposition with respect to "distilled spirits and liquors," since Applicant conceded that it lacked a bona fide intent to use its mark for those goods. However, the Board declined to declare the entire application void, citing The Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629 (TTAB 2007) ("an application will not be deemed void for lack of a bona fide intention to use absent proof of fraud, or proof of a lack of bona fide intention to use the mark on all of the goods identified in the application, and not just some of them."). It ordered that the identification of goods in the opposed application be amended to delete "distilled spirits and liquors."

Read comments and post your comments here.

TTABlog note: The Board answered the question posed in this TTABlog post: TTABlog Query: What's the Remedy When a Party Proves Lack of Bona Fide Intent?, which noted a conflict between the Wet Seal decision and the Board's ruling in Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545 (TTAB 2011).

Text Copyright John L. Welch 2013.


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